Different Work Made for Hire Test Under the Copyright Act of 1909

This case applies the Copyright Act of 1909 version of “work made for hire.”  Why are we still talking about the 1909 Act when the Copyright Act of 1976 became effective on January 1, 1978?  Since the 1909 Act applies to all copyrights secured before 1/1/1978 and the first term for pre-1/1/1978 copyrights is 28 years, followed by a second term of 67 years (28 + 67 = 95), some portions of the 1909 Act remain relevant until 2072.  (1977 + 95 = 2072).  Those portions of the Copyright Act of 1909 will remain relevant throughout the careers of Millennial attorneys, and then some.  I say some portions, because the 1976 Act did away with many of the 1909 Act’s draconian requirements.

Composer and music producer Jack Urbont wrote the Iron Man theme song in 1966.  Urbont wrote theme music for a variety of other Marvel television characters.  In 2000, without Urbont’s permission, Dennis Coles (aka Ghostface Killah), Sony and Razor Sharp Records produced and released Supreme Clientele, an album spotlighting the Iron Man theme song on two tracks.  Urbont became aware of the album around early 2010 and sued Sony, Coles and Razor Sharp Records for copyright infringement in 2011.  Sony and Razor Sharp argued that the Iron Man theme was a work made for hire for Marvel and that Urbont did not own the copyright.  The district court granted summary judgment in favor of Sony and Razor Sharp.  On appeal, the Second Circuit held that Urbont raised issues of material fact regarding his copyright ownership and vacated the district court’s summary judgment ruling.

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No Such Thing as Unintentionally Giving Up a Copyright Termination Right

Albert Brumley wrote the gospel song, “I’ll Fly Away,” in the late 1920’s.  The music publishing company he sold his song to registered the copyright in 1932.  Albert later purchased the music publishing company that bought his song, regaining ownership of the song.  Albert’s sons, Robert and William, became the owners of both the copyright to the song and the music publishing company by buying the company from Albert and his wife, Goldie, in 1975.  Albert died in 1977.  In May 1979, Goldie signed an agreement assigning all rights to obtain renewals of works composed by Albert to Brumley & Sons.  Robert bought out William’s interest in the company and became the sole owner in 1986.  Goldie died in 1988.

Robert’s four other siblings (excluding William) served Robert with a copyright grant termination notice in 2008.  The siblings later filed a lawsuit against Robert and Brumley & Sons to obtain a declaration that their termination notice was effective.  Robert argued that Goldie relinquished any terminating rights by making the 1979 assignment to Robert and William.  The district court ruled in the siblings’ favor on the termination right.  On appeal, the case was returned to the district court for a new trial on the work made for hire issue.  The district court again ruled in the siblings’ favor on the termination issue.  The Sixth Circuit Court of Appeals affirmed.  The work made for hire question was not an issue in the second appeal.

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Santa Song Reverts to the Author’s Heirs in Grant Termination Bid

J. Fred Coots and Haven Gillespie wrote the musical composition “Santa Claus is Comin’ To Town” (the Song) in the 1930s.  Through a series of grants, EMI came to own the copyright in the Song.  Coots’ heirs brought suit against EMI to terminate EMI’s copyright interests in the Song.  The district court ruled in EMI’s favor, determining that EMI owns the copyright until it expires in 2029.  My post Santa Claus Song Copyright Grant Not Terminated and Under Copyright Until 2029 details the district court’s ruling.

Copyright grant termination gives authors or their heirs a “second estate” in a copyright by allowing the author or heirs to reclaim the rights that the author previously assigned to someone else, usually a publishing company.  That way, the author or heirs can share more broadly in the financial benefits of a successful copyrighted work.

The Second Circuit concluded that Coots’ heirs’ 2007 termination notice will terminate a 1981 grant in 2016.  The Second Circuit reversed the district court’s judgment and remanded for the entry of a declaratory judgment in favor of Coots’ heirs.

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Smack Dab in the Middle of a Termination Rights Dispute!

This case addresses the standing required to challenge a copyright grant termination.  Standing is the legal ability to sue another person or entity in a particular court.  Ray Charles entered into agreements with his twelve adult children that he would set up irrevocable trusts for each of them and that that gift would be their entire inheritance from him.  Ray Charles’ will named The Ray Charles Foundation as the sole beneficiary to his estate.  The Foundation received Charles’ copyright royalties upon his death in 2004.  Later, seven of Charles’ children filed notices under 17 USC §§ 203 and 304(c) with the Copyright Office, terminating Charles’ copyright grants to Warner/Chappell.  The copyright termination rights provide authors with a second chance to exploit their works. My Power Point presentation Copyright Grant Termination Rights – Ghosts of Copyright Grants Past, Present and Future discusses copyright grant termination in detail.

The Foundation’s only source of funds is through Charles’ estate.  The Foundation challenged the Terminating Heirs’ termination notices.  The district court dismissed the Foundation’s complaint, ruling that the Foundation did not have standing to challenge the copyright grant terminations.  The Ninth Circuit overruled and remanded the case to district court.

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Publisher Fruitlessly Contests Stock Photo Company’s Standing to Sue

Minden Pictures is a stock photography company that also acts as a licensing agent for many photographers.  Minden considers itself “one of the world’s premium providers of wildlife and nature photos.”  Between 1993 and 2008, Minden entered into agreements with photographers that authorized Minden to act as the sole and exclusive agent and representative regarding licensing the uses of the photographers’ submitted images.  The photographers gave Minden the unrestricted, exclusive right to distribute, license and exploit their images.  At the same time, the photographers reserved some rights to themselves, but were prohibited from hiring another licensing agent.  Minden and the photographers also agreed that the photographers owned the copyrights.  Minden and the photographers later entered into agreements conveying some ownership interest to Minden and authorizing Minden to bring lawsuits for the unauthorized use of the images.

Minden sued educational publisher John Wiley & Sons for copyright infringement for exceeding the scope of the licenses Minden granted to it.  Wiley moved to dismiss the case on an FRCP 12(b)(1) motion (which the court noted should have been a 12(b)(6) motion) for failure to state a claim for relief.  Wiley argued that Minden lacked standing under the Copyright Act to bring the lawsuit, alleging Minden was not an owner and therefore could not sue for copyright infringement.  The district court agreed with Wiley and dismissed the case.  The Ninth Circuit reversed.  Minden presented evidence to the Ninth Circuit of its allegations of Wiley’s longstanding practice of copyright infringement, citing eleven other cases brought against Wiley.  The Ninth Circuit disregarded those allegations and limited its discussion to Minden’s case against Wiley.

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No Copyright Interest for Film Director’s Contributions

The Second Circuit faced a question of first impression:  May a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone? We conclude that, at least on the facts of the present case, he or she may not.  (Opinion pdf page 13).

Robert Krakovski owns and operates film-production company 16 Casa Duse, LLC.  Acting as the principal of Casa Duse, Krakovski purchased the rights to Heads Up, a screenplay written by Ben Carlin.  Film director Alex Merkin agreed to direct the film based on the screenplay, also entitled Heads Up.  Except for Merkin, all of the cast and crew members signed an Independent Contractor Agreement with Casa Duse, agreeing that their participation was “work for hire” and that Casa Duse would own the film’s copyright.  Merkin never did sign an independent contractor agreement with Casa Duse, despite receiving numerous email messages from Krakovski requesting Merkin to sign.  Production of the film began in May 2011 without Merkin signing an independent contractor agreement.

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Ghost Writer Heir Haunts Jersey Boys Collaborators

Lawyer, journalist and “Four Seasons” fan Rex Woodard and Thomas DeVito, an original band member, entered into a written agreement for Woodard to ghostwrite DeVito’s autobiography (the Work).  Woodard and DeVito agreed to split the proceeds from publishing and exploiting the Work.  Woodard died in 1991, after completing the Work, but before publication.  DeVito registered the Work under his name four months before Woodard’s death.  The Work was never published.

A convoluted series of agreements and events followed.  Ultimately, the musical “Jersey Boys” incorporated some portion of the Work.  Donna Corbello, Woodard’s widow and heir, sued DeVito, band members Frankie Valli and Robert Gaudio and the writers, directors and producers of the “Jersey Boys” for a variety of claims, including copyright infringement.  Corbello argued that “she, as legatee of Woodward’s joint copyright in the Work, deserves to share in the profits reaped by the various Appellees’ licensing and assignment, or infringement, as the case may be, of the underlying rights.” (Opinion pdf page 8).  The district court ruled against Corbello on all issues and taxed costs against her.

The Ninth Circuit framed the issue:  “We must decide whether a contractual grant of the exclusive right to use an individual’s ‘biographies’ to create a Broadway musical stage play also constitutes a transfer of a copyright ownership interest in that individual’s unpublished autobiography.”  (Opinion pdf page 5).

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Tavern Challenges BMI’s Chain of Title for Songs

Evie’s Tavern Ellenton, Inc. and owner Michael Evanoff (Evie’s Tavern) were sued by Broadcast Music, Inc. (BMI), The Bernard Edwards Company, LLC, R-Key Darkus Publishing, Orbi-Lee Publishing and other plaintiffs for copyright infringement.  The plaintiffs alleged that Evie’s Tavern violated their ownership rights by publicly performing copyrighted musical compositions without a license.  Instead of taking the plaintiffs’ ownership claims at face value, Evie’s Tavern challenged plaintiffs’ ownership claims.  Although Evie’s Tavern lost, this case illustrates how tenuous copyright ownership claims for musical works can be.

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License for Entire Term of Helga Hat Copyright Enforceable, For Now

This case involves the enforceability of a settlement agreement in a copyright infringement lawsuit.  David John registered a copyright for a Viking hat, aka a Helga hat.  MainGate, Inc. sold Minnesota Vikings wear, including Viking hats.  John sued MainGate, alleging that MainGate’s Viking hats infringed his Helga hat copyright.  MainGate received a license from John in exchange for a lump sum payment and royalties on future sales.  One of the terms of the settlement agreement provided that “the term of this royalty obligation is for the life of the copyright and it shall end when the copyright ends. During that time, neither side can withdraw from this agreement for the life of the copyright.”  (Opinion pdf p. 8).

John grew dissatisfied with MainGate’s refusals to John’s requests for inventory audits that John believed he was entitled to under the settlement agreement.  John again sued MainGate for copyright infringement.  The district court ruled that MainGate did not breach the settlement agreement, that John could not terminate the settlement agreement and that MainGate’s license continues until John’s copyright expires.  Given an author’s copyright grant termination rights, the enforceability of the license for the entire length of the copyright remains to be seen.

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Not All Copyright Ownership Disputes Get Decided in Federal Court

It has long been established in this Circuit that a title dispute is a traditional state court property dispute which does not necessarily confer federal copyright jurisdiction.  If it were otherwise, then every copyright title dispute could be brought in federal court. That said, many copyright ownership disputes clearly do arise under the Copyright Act.  For example, a dispute that turns on whether a copyrighted work was created independently or as a ‘work made for hire’ is an ownership dispute that unquestionably arises under the Copyright Act.

(Opinion pdf page 4). 

Federal courts have exclusive jurisdiction (i.e., power to decide the case) over copyright cases.  State courts do not have jurisdiction to decide federal copyright issues.  What determines whether a copyright ownership dispute is simply a contractual issue to be decided in state court or whether it is a copyright issue to be decided in federal court?

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